Oxford Global Resources, Inc.

Trademark Trial and Appeal Board

Jan 24, 2007

No. 76589185re (T.T.A.B. Jan. 24, 2007)

Mailed:
January 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Oxford Global Resources, Inc.
________

Serial Nos. 76589185 and 76589186
_______

Kevin M. Hayes of Klarquist Sparkman, LLP for Oxford Global
Resources, Inc.

Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Zervas and Walsh, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On September 11, 2006, the Board issued a decision
affirming the Examining Attorney’s refusals of registration
with respect to the services in Class 35 in the above-
identified applications.1 Because the appeals presented
common issues and evidence, we decided both in a single
opinion.

1 The applications also included services in Class 42, but the
Examining Attorney did not refuse registration with respect to
this class, so the registrability of applicant’s marks in Class
42 was not at issue in the appeals.
THIS DISPOSITION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 76589185 and 76589186
2
On October 16, 2006, with a certificate of mailing
dated October 10, 2006, applicant timely filed requests for
reconsideration of that decision. Although separate
requests were filed for each application, because the
requests make the same arguments (the differences in the
arguments being largely based on the specific marks
involved), we again decide both requests in a single
decision.
Applicant argues, essentially, that the Board
improperly dissected applicant’s and the registrant’s marks
in its finding that the marks are similar; that it did not
give appropriate weight to the visual aspects of the
respective marks and the differences in wording; that it
erroneously found the factor of consumer sophistication not
to favor applicant; and that it gave insufficient weight to
the evidence of coexistence of applicant’s marks and that
of the registrant.
We deny the requests for reconsideration.
Applicant’s marks are OXFORD & ASSOCIATES and OXFORD
INTERNATIONAL; the cited registration is for the mark
OXFORD LEGAL ASSOCIATES and design, as shown below.
Ser Nos. 76589185 and 76589186
3

Applicant asserts that the Board relied too heavily on
the disclaimers of descriptive matter in considering
whether the marks are similar, pointing out that disclaimed
elements of a mark are relevant to the assessment of
similarity because purchasers will not be aware that
certain words have been disclaimed. However, while we
noted in our decision that the words LEGAL ASSOCIATES had
been disclaimed in the cited mark, and ASSOCIATES and
INTERNATIONAL had been disclaimed in applicant’s marks, it
was not the fact of the disclaimers that caused us to give
less weight to these elements, but the fact that the
disclaimed words were descriptive and have little or no
source-indicating significance. Applicant has pointed out
that the Board erroneously indicated that the ampersand in
applicant’s mark was disclaimed: “The elements ‘&
ASSOCIATES’ and ‘INTERNATIONAL’ in applicant’s mark, which
applicant has disclaimed.” Applicant is correct, but this
Ser Nos. 76589185 and 76589186
4
misstatement does not affect the finding of likelihood of
confusion. Again, it is not the fact of whether a
disclaimer appears in the record of an application or
registration, but the significance of a term in a mark.
The ampersand in applicant’s mark, like the word
ASSOCIATES, has virtually no source-indicating
significance. Although & ASSOCIATES and INTERNATIONAL
provide some additional descriptive information about the
nature of the services or the company, it is the word
OXFORD to which consumers will look as the source-
identifying element, and therefore deserves far greater
weight in the likelihood of confusion analysis.
As the Board pointed out in its decision, it is a
well-established principle that, in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In its opinion the Board discussed why, in the
present case, the word OXFORD is deserving of greater
Ser Nos. 76589185 and 76589186
5
weight than the words & ASSOCIATES and INTERNATIONAL in
applicant’s marks, and LEGAL ASSOCIATES and the design in
the registered mark, and we will not repeat those reasons
here. Suffice it to say that we did not treat applicant’s
marks or the registrant’s mark as OXFORD per se. Rather,
we acknowledged that “a direct comparison between
applicant’s marks and the registered mark shows specific
differences” and took such differences into account.
However, these differences, which applicant has discussed
in some detail, are not sufficient to distinguish the
marks.
Applicant also asserts that the Board did not give
sufficient weight to the design element in the cited mark
because it is “interleaved” with the literal elements, and
that the Board was not consistent in its treatment of the
visual elements of applicant’s marks and the registrant’s
mark. Specifically, applicant points out that the Board,
in considering the effect of the words LEGAL ASSOCIATES in
the registered mark, found it to have a “minimal visual
presence.” Therefore, applicant claims that “the Decision
considers the significance of visual differences when they
support the Decision’s conclusion, but dismisses them when
they do not.” Request for recon, p. 5.
Ser Nos. 76589185 and 76589186
6
We are not persuaded by this argument, and see no
inconsistency in the Board’s treatment of the visual
differences. As stated above, and in the decision as well,
the Board recognizes that there are some differences in the
marks, due to the presence in applicant’s marks of the
words INTERNATIONAL and & ASSOCIATES, and the presence in
the registrant’s marks of LEGAL ASSOCIATES and the design.
However, these differences are not sufficient to avoid the
likelihood of confusion. The word OXFORD is the dominant
element of the cited mark because, although it also
includes other words, those words LEGAL ASSOCIATES are
descriptive and appear in much smaller letters. Further,
while there is a design element in that mark, the word
OXFORD has a more prominent appearance. In addition, those
who refer to the mark orally (such as individuals who are
happy with the employment placement services and recommend
them to friends) will not articulate the design portion.
In sum, we find no error in our finding that
applicant’s marks are confusingly similar to the
registrant’s mark. We also reiterate our previous
statement that when, as here, the marks appear in
connection with virtually identical services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. See Century 21 Real Estate Corp. v.
Ser Nos. 76589185 and 76589186
7
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Applicant also argues that the Board erred in not
finding in its favor on the factor of consumer
sophistication and/or care, saying that the Board employed
circular reasoning in finding that because the marks are
likely to cause confusion, even sophisticated consumers
would be confused. Applicant also asserts that the
individuals who would seek employment through an employment
agency would exercise great care in selecting the provider
of their employment services.
The Board stated in the opinion:
Moreover, we do not see how the
asserted sophistication of these
consumers would avoid confusion.
Applicant’s services and those of the
registrant are for the most part
identical and otherwise closely
related. The registrant’s mark, as far
as this record is concerned, is a
strong mark. In these circumstances,
even sophisticated consumers are likely
to believe that when applicant’s marks,
which are so similar to the
registrant’s, are used in connection
with such services, the services come
from a single source.

Consumer sophistication is a factor that favors a finding
of no likelihood of confusion if such consumers are
familiar with the marketplace, and, for example, would be
aware that certain goods or services would not normally
Ser Nos. 76589185 and 76589186
8
emanate from a single source. Or they might be aware of a
practice in their industry in which many different
companies use similar marks, and vary them by including
words such as INTERNATIONAL or ASSOCIATES, such that they
would ascribe importance to even subtle differences in
marks. Sophisticated purchasers such as employees of
personnel offices or human relations specialists would also
be careful purchasers who would not purchase services on
impulse, and would pay attention to trademarks. However,
in the present case, the services are identical, and there
is no evidence in this record that companies in this
industry differentiate their services by the presence or
absence of a design, or the use of different descriptive
words. On the contrary, as we pointed out in our decision,
on this record the registrant’s mark is a strong mark.
Thus, while sophisticated consumers may note the specific
differences in the marks, they will not ascribe the
differences to different sources of the services.
Therefore, the sophistication of applicant’s consumers in
the present case does not serve to avoid a likelihood of
confusion.
However, even if we were to consider this factor to
favor applicant in terms of the sophistication of human
relations specialists/personnel offices, applicant’s
Ser Nos. 76589185 and 76589186
9
customers are also the individuals who would avail
themselves of applicant’s temporary employment and job
placement services. Applicant asserts that such
individuals would “exercise great care in selecting the
provider of services related to their own employment--i.e.,
the activity that provides them with food, clothes, and
shelter. In that respect they should be considered
sophisticated.” Request for reconsideration, Ser. No.
76589185, p. 7, Ser. No. 76589186, p. 6. We disagree with
both of applicant’s assertions. Even if an individual is
careful about a purchase, that does not necessarily make
him a sophisticated purchaser, since sophistication
involves knowledge of the product or industry. Nor do we
accept applicant’s position that individuals looking for
employment, including temporary employment, will exercise
great care in selecting an employment agency, as opposed to
the company where he ultimately chooses to work.
Thus, we cannot consider such individuals to exercise
any more than ordinary care in deciding to obtain
employment agency services. As we said in our opinion,
Rather, someone looking for a job might
hear from a friend of a good experience
with OXFORD LEGAL ASSOCIATES. Upon
being contacted by or seeing an
advertisement from OXFORD & ASSOCIATES
or OXFORD INTERNATIONAL, that person
might, because of the fallibility of
Ser Nos. 76589185 and 76589186
10
memory, think that this was the same
name that had been mentioned by the
friend, or think that these marks are
variations of OXFORD LEGAL SERVICES.

Thus, we adhere to the finding in our opinion that the
factor of the sophistication/care of purchasers does not
favor a finding of no likelihood of confusion. We should
also add that, even if this factor were to favor applicant,
the other du Pont factors, and particularly the factors of
the identity of the services and the similarity of the
marks, clearly outweigh the probative effect of this
factor. See In re Shell Oil, 992 F.2d 1204, 1206, 26
USPQ2d 1687, 1688 (Fed.Cir. 1993) (the various du Pont
factors “may play more or less weighty roles in any
particular determination”).
Finally, applicant asserts that the Board accorded too
little weight to the evidence of coexistence of applicant’s
marks and the registrant’s mark. In our opinion, we
pointed out the problems with applicant’s evidence going to
the factor of coexistence:
However, although applicant has stated
the length of time it has used its
marks, it has not provided any
information about the extent of such
use, including whether the mark has
been used or advertised in the same
market area as the registrant’s mark.
For that matter, we have no information
whatsoever about the registrant’s
activities, such as the area in which
Ser Nos. 76589185 and 76589186
11
the registrant renders its services, or
the extent of its business activity or
its advertising. Nor do we have any
information from the registrant as to
its experience with actual confusion.

Applicant now states that there is some evidence of
the registrant’s use because the fact of the registration
shows that registrant’s mark has been used in interstate
commerce. From this basis, applicant contends that “the
nature of placement and recruiting services is that
recruits are sought and placed wherever they may be and
wherever they may be needed.” Request for recon, p. 7.
Applicant also asserts that “individuals often move all
over the country to pursue their careers,” and extrapolates
from this that “marks used in interstate commerce for
placement and recruiting services would be encountered by
the same consumers and would have been confused if
confusion is likely.” Ser. No. 76589186, p. 7.
We find applicant’s arguments to be highly speculative
and not supported by the record. The fact that the cited
registration is based on use in interstate commerce is not
evidence that the mark is in use in all states in the
United States, nor has applicant submitted evidence that it
operates in all states, or that the areas in which
applicant operates overlap with the areas where registrant
operates, let alone that applicant and registrant have made
Ser Nos. 76589185 and 76589186
12
extensive use in any supposed areas of overlap, such that
we could conclude that there has been an opportunity for
confusion to occur. Applicant’s general statement that the
United States has a mobile workforce is not sufficient for
us to find that a significant number of consumers have been
exposed to both applicant’s and registrant’s marks.
Accordingly, we find no error in our conclusion that the
factor of absence of evidence of actual confusion is
neutral, and does not favor a finding of no likelihood of
confusion.
Decision: The requests for reconsideration are
denied. We adhere to our affirmance of the Examining
Attorney’s refusals of registration for the applications in
Class 35.